No trademark infringement found in condiment name dispute. PERRY v. HEINZ

Trademark law is intended to protect consumers from being tricked into buying products from someone other than the trademark owner. A trademark is something that a seller uses to brand its products. Traditionally a trademark is considered a word phrase or symbol, but anything that signals to consumers the identity of the product manufacturer can qualify for trademark protection. The first user of a trademark is referred to as the senior user, subsequent users are called junior users. Trademark law grants the senior user a trademark owner the exclusive right to brand its products with a trademark. If someone other than the trademark owner starts branding products with a trademark in a way that is likely to cause consumer confusion, that can be considered trademark infringement.

The likelihood that consumer confusion will occur is the key issue in trademark infringement. Determining when a likelihood of confusion exists can be difficult to objectively define. Courts review several factors, referred to as Polaroid factors, to determine whether there is a likelihood of confusion. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). Each circuit in the United States federal court system has a slightly different set of factors but the principles of the test are similar. Those factors are: (1) Strength of the senior user’s mark, (2) Similarity of the marks, (3) Similarity of the products or services, (4) Likelihood that the senior user will expand their product line into the junior user’s product line, (5) The junior user’s intent in adopting the mark, (6) Evidence of actual confusion, (7) Sophistication of the buyers, and (8) Quality of the junior user’s products or services.

The similarity of two products is but one of the many factors used to determine whether consumer confusion exists. Actually using a trademark to brand similar products is necessary for consumer confusion to exist. Even if two different products have identical properties trademark infringement cannot occur if the products are branded with different trademarks.

DENNIS PERRY v. H.J. HEINZ COMPANY BRANDS LLC, 19-280 (E.D.LA 2020) is a case where trademark infringement was not found between two very similar products sold using different trademarks.

In 2007, Plaintiff filed a federal trademark application for METCHUP a brand of condiment sauce. Since August 15, 2010, Plaintiff has manufactured, bottled, and sold his METCHUP brand condiment sauces within the United States. In 2011, the USPTO granted Plaintiff trademark registration 3,920,035 for METCHUP . The goods recited in Plaintiff’s METCHUP registration are “ketchup; mayonnaise; mustard.” At the time of trial Plaintiff had sold approximately 34 bottles of METCHUP. Plaintiff has never sold the products in stores or online.

In 2018, Defendant launched a family of “flavor mashup” condiment sauces. The sauces included HEINZ® KRANCH (ketchup and ranch sauce), HEINZ® MAYOMUST (mayonnaise and mustard sauce), HEINZ® MAYOCUE (mayonnaise and barbecue sauce) and HEINZ® MAYOCHUP (mayonnaise and ketchup sauce). In April 2018, Defendant began a marketing campaign for HEINZ® MAYOCHUP. As part of the marketing campaign Defendant invited the public to submit proposed names for the new product. At least 95 suggested product names were submitted to the Defendant, including the name METCHUP. At the end of the marketing campaign, Defendant posted an image on its website of a “gallery” of submitted names shown on virtual mock-up bottles. Defendant subsequently launched HEINZ® MAYOCHUP in the United States around September 2018. HEINZ® MAYOCHUP is now sold in retail stores across the country and online.

In January 2019, Plaintiff filed a complaint alleging trademark infringement, federal counterfeiting and false designation of origin, as well as related state law claims. Neither party disputed the facts of the case and both parties moved for summary judgement in their favor.

The District Court found that consumer confusion was unlikely and granted summary judgement in favor of the Defendant. The court based this finding on the fact that Plaintiff failed to produce any evidence to show that the trademark and product sold by Defendants is similar to Plaintiff’s METCHUP mark. Defendant never used METCHUP to sell products in commerce and Plaintiff failed to submit any evidence that Plaintiff ever intended to do so. The Court noted that a name suggestion from the public, for a yet to be sold product, does not rise to the level of trademark infringement.

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